IP Law Bulletin

The United States Patent and Trademark Office (USPTO) recently published supplementary examination guidelines for determining compliance with 35 U.S.C. § 112 (“the § 112 Guidelines”). Similar to the 2010 KSR Guidelines Update released last year, the § 112 Guidelines provide best practices for examiners as well as examples of compliant and non-compliant claims from recent case law. USPTO Director David Kappos noted that “[o]ptimizing patent quality by providing clear notice to the public of the boundaries of the inventive subject matter protected by a patent grant fosters innovation and competitiveness.”

The § 112 Guidelines broadly provide a three step framework for examining claims with respect to § 112, and in particular with respect to § 112, second paragraph. In the first step, claims should be interpreted in order to “fully understand the subject matter of the invention,” and “ascertain the boundaries of that subject matter.” The § 112 Guidelines remind examiners that claims pending in an application should be given their “broadest reasonable interpretation consistent with the specification as it would be interpreted by one of ordinary skill in the art.” The Guidelines stress that addressing definiteness during prosecution, when the claims can be amended and no presumption of validity exists, is far superior to addressing the issue later in the life of the patent.

The second step is determining whether the broadly interpreted claim language is definite. This involves an inquiry as to whether one of ordinary skill in the art “would understand what is claimed when the claim is read in light of the specification.” Further consideration, complete with examples, is given to the use of functional claim elements, terms of degree, subjective terms, Markush groups, and dependent claims. The § 112 Guidelines also provide information on the requirement of 37 C.F.R. § 1.75(d)(1) that claim terms have clear support and antecedent basis. Finally, the Guidelines lay out the framework for examining claims under § 112, paragraph six, including the interaction between paragraphs two and six, and implications for computer-implemented means-plus-function claim limitations.

The third step in the § 112 analysis is resolving indefinite claim language. Here, the § 112 Guidelines stress best practices for examiners including establishing a clear record through explanation of adopted claim interpretations. Principles of compact prosecution are also encouraged. These include opening “lines of communication” with applicants by conducting an interview before resorting to an indefiniteness rejection. The Guidelines also recommend that examiners review “each claim for compliance with every statutory requirement for patentability in the initial review of the application and identify all of the applicable grounds of rejection in the first Office Action to avoid unnecessary delays.” Finally, examiners are reminded to include claim interpretations in their reasons for allowance if the record is at all unclear on the issue.

The § 112 Guidelines published in the Federal Register on February 9, 2011, and the USPTO will accept public commentary on the guidelines for 60 days. While the USPTO is quick to note that these guidelines do not represent substantive rulemaking, they do provide an insight into the practices that the USPTO wants examiners to adopt during prosecution. Much like the 2010 KSR Guidelines Update, the § 112 Guidelines should prove to be a useful aid to applicants and practitioners when drafting claims or arguing § 112 rejections.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.